The USPTO allows for registration of trademarks on two different registers. The Principal Register is the ultimate goal for legal protection in the U.S. However, if your trademark is deemed not distinctive of your goods and services, but only capable of being distinctive, it can be registered on the Supplemental Register. The Supplemental Register offers some advantages, but not as much as the Principal Register.
Trademarks can be different levels of distinctiveness when you identify your goods. You can learn more about that here. Basically, certain factors can make a mark stronger and more distinct based mainly on the description of a mark for the goods and services. For example, generic marks – like a skateboard shop that wants a trademark for the name “Skateboard Shop” – is never on any register. On the other side, a fanciful term (a made up word, like Pepsi or Exxon) or an arbitrary term (a word that doesn’t describe or suggest the kind of goods sold, like Apple for Computers or Camel for cigarettes) are “inherently distinctive,” as are suggestive marks, which may use terms or images that hint at characteristics of the goods and services, like Coppertone, Citibank, or Netflix.
Marks that fall in the middle of that spectrum of distinctiveness – between generic and inherently distinctive – are known as merely descriptive. While they don’t just generically identify the goods, the marks use terms that describe the goods or services. These descriptive terms are usually ones that other businesses in the trade channels of those goods and services will likely use to describe their products. If a candy bar called itself “Crunchy” or a furniture brand called itself “Comfortable Couches,” those would be considered descriptive marks. Surnames are in the same boat for similar reasons. [Surnames blog post or video link.] Merely descriptive marks (as well as some other kinds of trademarks that aren’t generic, but the law does not recognize as “inherently distinctive”) have to prove that they have become distinctive of a specific source of goods and services before they can get the protections of the Principal Register.
The Principal Register
Registration on the principal register is allowed for marks that are distinctive of the source of goods and services and comply with all other trademark laws, rules, and regulations. The Principal Register offers the most protection for brand owners and consumers that can be obtained through the law. Registration bestows upon the owner of the trademark the following:
- A presumption of validity of the mark;
- Prima Facie evidence of the exclusive right to use the mark by the registrant;
- The possibility of becoming “incontestable”;
- Constructive notice to the public of the mark’s existence to preempt defenses for infringement;
- Ability to deposit the registration with the Customs and Border Patrol to prevent imported counterfeits; and
- Other benefits (including those listed below for the Supplemental Register).
The Supplemental Register
Registration on the Supplemental Register – usually after a rejection from the USPTO Principal Register for some reason – is allowed for marks while not generic, are not distinctive of the source of goods and services sufficiently to be allowed registration on the Principal Register. These marks have to either overcome the decision of the USPTO that they were not inherently distinctive or show that they somehow have acquired distinctiveness. Registration on the Supplemental Register does not give you all of the benefits of the Principal Register, but it does:
- Allow the registrant to use the registration symbol ®;
- Allow the registrant to bring legal action against infringers in Federal Court;
- Provide a basis for a filing in a foreign country;
- List the registration in the TESS database and other databases that the public and Examining Attorneys access when examining possibly confusing marks; and
- Provide evidence of use for later applying to the Principal Register.
Whether the trademark ultimately ends up on the Principal Register or the Supplemental Register, the important thing is to get an application to the USPTO to protect your trademark rights. If you need help with that, set up a Free Consultation with Wolfe Legal Services, and I’ll help you get your intellectual property rights under control.
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